The Complainant is WhatsApp Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Domain Admin, Privacy Protect, LLC (PrivacyProtect.org), United States / Balan Indiana, ExPriox, Eritrea. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 11, 2020. On May 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 10, 2020. The Center appointed Knud Wallberg as the sole panelist in this matter on June 18, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is the provider of WhatsApp, a popular mobile messaging application allowing users to exchange messages via smartphones without having to pay for short message service (SMS) messages. The Complainant was founded in 2009 and its WhatsApp application now has over 2 billion active users worldwide. The Complainant has registered numerous trademarks consisting of the term WHATSAPP in many jurisdictions throughout the world, including International Registration No. 1085539, WHATSAPP, registered on May 24, 2011 for goods and services in International classes 9 and 38. The Complainant is also the owner of numerous domain names, consisting of the WHATSAPP trademark, under various generic Top-Level Domains as well as under many country code Top-Level Domains. The disputed domain name The Complainant submits that the disputed domain name is confusingly similar to the trademarks in which it has rights, since it comprises a misspelling of the Complainant’s WHATSAPP trademark, in that it adds an extra “s” to the “whats” element of the Complainant’s mark, and replaces the “a” in the element “app” with the letter “o”, and that the Top-Level Domain extension “.com” may be disregarded for the purposes of assessment under the first element. The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of its WHATSAPP trademark, in a domain name or otherwise. The Respondent cannot assert that it has been using the disputed domain name prior to any notice of the present dispute, in connection with a bona fide offering of goods or services, since the disputed domain name was and still is used for a website purportedly inviting people to join a WhatsApp Group and on which the Respondent is making use of the Complainant’s telephone logo figurative trademark as a favicon, and on which the footer of the website reads: “2017 © WhatsApp Inc.”. The Complainant also submits that there is no information that shows that the Respondent can legitimately claim to be commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. The Complainant finally submits that given the Complainant’s renown and goodwill worldwide and given the content of the Respondent’s website the Respondent had actual and constructive knowledge of the Complainant and its rights at the time of registration of the disputed domain name. The disputed domain name is used in bad faith as it is used in connection with a website that promotes the use of the Complainant’s messaging services in connection with the sharing of pornographic materials, which promotes a negative image of the Complainant’s services and thus tarnishes its trademark. The Complainant further submits that the Respondent’s website also has the resulting effect of redirecting Internet users to the third-party website “www.news-palata.com”, which does not represent any bona fide use of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Paragraph 4(a) of the Policy directs that a complainant must prove each of the following: (i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate. A. Identical or Confusingly Similar Based on a side-by-side comparison of the disputed domain name and the Complainant’s trademark WHATSAPP and based on the content of the website, on which the Respondent uses the Complainant’s trademark and company name the Panel finds that the disputed domain name The Panel therefore finds that the conditions in paragraph 4(a)(i) of the Policy are fulfilled in relation to the disputed domain name. B. Rights or Legitimate Interests Based on the case record the Panel finds that the Complaint has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and there is no evidence of the types of circumstances set out in paragraph 4(c) of the Policy that in this case might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings. On the contrary, the way that the Respondent has used and is using the disputed domain name, namely for a website that contains a “WhatsApp Group Invite” and that purportedly provides information on the Complainant and on which the footer of the website reads: “2017 © WhatsApp Inc.”, makes it inconceivable to the Panel that such rights or legitimate interests exist. Consequently, the Panel finds that the condition in paragraph 4(a)(ii) of the Policy is also fulfilled. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires the complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides examples of circumstances, which shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location. Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith. Given the circumstances of the case, including the evidence on record of the use of the Complainant’s trademark WHATSAPP worldwide, the distinctive nature of this mark, and the Respondent’s use of the disputed domain name, it is inconceivable to the Panel that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. The Panel therefore finds that the disputed domain name was registered in bad faith. As described above, the disputed domain name has been and is still being used actively for a website that obviously seeks to trades off the complainant’s reputation, in a way that the Panel finds is clearly bad faith use under the Policy. Noting that the disputed domain name is an intentional misspelling of the Complainant’s distinctive trademark WHATSAPP, together with the gTLD “.com”, that the Respondent has no rights or legitimate interest in the disputed domain name, that the Respondent has registered and is using the disputed domain name in bad faith, and considering all the facts and evidence, the Panel finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name Knud Wallberg
Sole Panelist
Date: July 3, 2020
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